Trademark Searches

WHY TO SEARCH TRADEMARKS

The two main reasons to search trademarks are to avoid trademark infringement trademark and to determine potential conflicts before applying for trademark registration.

Avoid Infringement

You should not begin using a trademark without considering whether it might be infringing someone else’s trademark. Even if you feel the mark is quite unique and you are unaware of any other use of the mark, you may still be infringing. For example, if a business at the other end of the country has registered the same or a similar mark, then their rights will extend across Canada and will likely supercede yours. You may build up a nice business around your trademark, only to be sued for trademark infringement years later. You may have to abandon your trademark and pay the other party considerable damages.

Registration

It is not a legal requirement that a trademark be searched before the application for registration is submitted. However, it is strongly recommended that you do so, as it can save you considerable time and money. If it turns out that there is already a registered trademark that is so similar to yours that your mark will be refused, then you will likely have wasted up to 12 months and at least the CIPO application fee. It is pointless to apply for
registration of a trademark that cannot be granted.

Registered and Unregistered Trademarks

Trademarks can be either registered or unregistered. A “registered” trademark has been recorded on an official federal government database. An “unregistered” trademark is not on such a registry.

Searches for registered trademarks can be done on the CIPO trademarks database, which is accessible on the Internet.
Searches for unregistered trademarks are more difficult to carry out, since they involve a far wider scope then just registries. If you use someone’s trademark, whether it is registered or not, you may face legal action for trademark infringement. Therefore searches outside the registries (often called “common-law” searches) are very advisable.

Corporate, trade names and business names should also be searched. If someone is using a confusingly similar name, they may be able to sue you and block your application for a trademark registration.

Exact Matches and Confusing Marks

A search for an exact character match is relatively straightforward. The search for what in law are known as confusing trademarks or business names is much more difficult. A confusing trademark may look or sound like the one you are proposing, and if so, it is just as much an obstacle to your registration as if it were an exact match. For example, if you searched “Coca Cola,” you would quickly find it is trademarked. But if you were to search for an exact character match for “Koka Kola,” you may not find it on the trademark registry. Nevertheless, you would not be permitted to trademark or use “Koka Kola.”

A search for confusing trademarks is therefore just as important as the search for exact matches. In fact, one of the most common reasons for rejection of an application is that the Trademark Examiner believes it to be “confusing” with another trademark on the registry.

Once you do have the search results, you have to filter them for ‘confusing’ trademarks or tradenames. ‘Confusion’ is a term of art in trademarks, and factors include the field of business, channels of trade and the degree of resemblance in appearance, sound or ideas suggested by the two trademarks.

Trademark Registry Searches

These searches concentrate on the federal registry of trademarks. Exact match searches are relatively straight-forward. We also provide a free prescreen search that not only searches the trademark registry, but also over 8 million records of corporate, business and trade names across Canada.

Common-Law Searches

Since a trademark does not have to be registered in order to be valid, you should search for unregistered trademarks as well. Your least expensive and first search for exact matches should be an Internet search. Other sources are libraries, trade journals, business directories, magazines and newspapers, which can be found both on-line and off.